A Look at Chile’s Draft Trademark Law

Attendees of a virtual roundtable cosponsored by INTA and Alessandri Abogados on April 29 discussed elements of the draft “Short Law” that will impact the Chilean trademark system. Particularly noteworthy are the possible changes regarding nullity actions, which could now be based on a lack of use after five years from the granting date of a trademark. 

The roundtable included three officers from the Chilean National Institute for Industrial Property (INAPI): Bernarditta Ditus (Trademarks Deputy Director), Sergio Escudero (Head of Department), and María José Sepúlveda (Attorney, International and Public Policy). Hosting the event were Rodrigo Velasco and Santiago Ortuzar, both of Alessandri Abogados. 

At the outset, speakers discussed whether INAPI would make immediate changes to existing regulations or instead whether it would take the opportunity to prepare a wider revision to the laws overall. 

Because new laws must be published six months after enactment, they agreed it would be difficult to prepare a fully revised regulation. Instead, it is likely it will focus on incorporating just the necessary amendments to fully implement the new nullity actions and protection of nontraditional trademarks. They added that some issues would likely need to be solved via the courts and case law over time. The short time frame also will make it unlikely to conduct a public consultation on the new regulations. 

Attendees asked if INAPI had liaised with foreign trademark offices or had considered other legislations in the development of the applicable regulations. The officers said they had indeed taken into account comparative experience along with doctrine and jurisprudence from other countries, including the European Union and the United States. They also considered the practice in jurisdictions of the Andean Community and others that recently incorporated similar changes to their laws, including Mexico.

Of note, the new nullity procedures may only be brought ex parte demonstrating legitimate interest (a concept that would be interpreted broadly, according to INAPI’s officers). INAPI will not have the ability to perform ex-officio procedures due to lack of use.

Furthermore, the new law will not require a trademark owner to declare or demonstrate use at any time. Neither will voluntary declarations of use (to try to avoid or anticipate a nullity action) be allowed, as such a declaration would not suffice to prove a real and effective use on the market.

Regarding the introduction of nontraditional trademarks into Chilean law, the officials clarified that elimination of the graphic representation requirement would open the possibility to apply for various types of nontraditional trademarks.

This law project is currently in its second reading in the Chilean Senate, possibly proceeding to the third reading stage soon. However, the COVID-19 health emergency have occupied the agenda of the Senate, making it difficult to have this law approved before the end of the year.

Although every effort has been made to verify the accuracy of items in the INTA Bulletin, readers are urged to check independently on matters of specific concern or interest.

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